Align Technology, Inc.

Patent Trials and Appeals Board

Nov 1, 2021

IPR2020-01643 (P.T.A.B. Nov. 1, 2021)

Trials@uspto.gov
571-272-7822
Paper 20
Date Entered: November 1, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

3SHAPE A/S and 3SHAPE INC.,
Petitioner
v.
ALIGN TECHNOLOGY, INC.,
Patent Owner.
____________

IPR2020-01643
Patent 10,507,088 B2
____________

Before BRIAN J. McNAMARA, NEIL T. POWELL, and
ELIZABETH M. ROESEL, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge McNAMARA.

Opinion dissenting filed by Administrative Patent Judge ROESEL.

McNAMARA, Administrative Patent Judge.

DECISION
Denying Patent Owner’s Request on Rehearing of Decision
Granting Institution of Inter Partes Review

37C.F.R. § 42.71(d)

IPR2020-01643
Patent 10,507,088 B2

2

I. INTRODUCTION
On May 10, 2021 we entered a Decision to Institute inter partes review of
U.S. Patent No. 10,507,088 B2 (the ’088 patent”) based on challenges in a Petition
(“Pet.”) filed by 3Shape A/S and 3Shape Inc. (collectively, “Petitioner”). Paper 9
(“Dec. to Inst.”). On May 24, 2021, Align Technology, Inc. (“Patent Owner”)
filed a Request for Rehearing. Paper 11 (“Req. Reh’g.”). Patent Owner also filed
a request for a Precedential Opinion Panel (“POP Request”). On July 15, 2021,
Patent Owner’s POP Request was denied. Paper 15. We now address Patent
Owner’s Request for Rehearing of the Decision to Institute.
When rehearing a decision on institution, the Board reviews the decision for
an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if
the decision is based on an erroneous interpretation of law, if a factual finding is
not supported by substantial evidence, or if an unreasonable judgment is made in
weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed.
Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re
Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).
The burdens and requirements of a request for rehearing are stated in 37
C.F.R. § 42.71(d):
(d) Rehearing. . . . The burden of showing a decision should be
modified lies with the party challenging the decision. The request must
specifically identify all matters the party believes the Board
misapprehended or overlooked, and the place where each matter was
previously addressed in a motion, an opposition, or a reply.
We address below the matters Petitioner asserts we overlooked or
misapprehended.
For the reasons discussed below, the Request for Rehearing is DENIED.
IPR2020-01643
Patent 10,507,088 B2

3

II. ANALYSIS
A. Introduction
Patent Owner asserts that the Decision to Institute (“Dec. to Inst.”) overlooks
deficiencies in the Petition and misapprehends the law. See generally Req. Reh’g.
Focusing on claim limitations 1.10 and 19.9, Patent Owner contends that
Petitioner’s challenge “was premised on a theory of express disclosure in the
prior art reference Berner (EX 1003).” Id. at 2. According to Patent Owner,
Petitioner merely quoted portions of Berner without explaining the relevance of the
cited portions. Id. (citing Dec. to Inst., Dissent 3). Patent Owner accuses the
majority of “morphing the analysis from one of disclosure that is so apparent no
explanation is needed into an obviousness theory premised on evidence and
explanation that was not presented in the petition.” Id. at 2–3. As discussed
below, much of the explanation that accompanies our analysis of Petitioner’s
obviousness challenge in the Decision to Institute is responsive to issues presented
in the Patent Owner Preliminary Response.
B. The Challenge Presented By the Petition
We first turn to Patent Owner’s assertion that Petitioner’s challenge “was
premised on a theory of express disclosure.” Reh’g. 3. According to Patent Owner
“[w]hile the petition presented a theory that was based on (at most) disclosure, the
decision presented a theory based on what would have been suggested to a person
of ordinary skill, in effect creating a new ground of challenge.” Id. at 4.
As an initial matter, Patent Owner’s assertion that the Petitioner’s challenge
relies solely on express “disclosure” is inconsistent with the Petition. The Petition
includes numerous assertions (we estimate over 30 such assertions) about what the
references suggest to a person of ordinary skill. See, e.g., Pet.20, 26–29, 31–32,
35, 39, 41–42, 44, 46, 52, 54–64. As one example, the Petition explicitly states
IPR2020-01643
Patent 10,507,088 B2

4

“the lens configuration as described and depicted in Berner’s Figure 2 may be
evaluated for what it reasonably discloses or at least suggests to a POSITA.” Pet.
42.
The sole challenge asserted in the Petition is that claims 1–5, 7, 9, 19–24,
and 26 are unpatentable under 35 U.S.C. § 103 as obvious over Berner and Ginani.
Pet. 5. To establish obviousness of a claimed invention, all the claim limitations
must be taught or suggested by the prior art. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 406 (2007). See CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342
(Fed. Cir. 2003); In re Royka, 490 F.2d 981, 985 (CCPA 1974). We decline Patent
Owner’s invitation to create a new, more limited form of obviousness based solely
on the explicit disclosure in a reference. An obviousness analysis “need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In
re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Even if Petitioner
supported its challenge with numerous quotations from Berner, the issue presented
by the Petition is not the express disclosure in the cited references—it is whether
the claimed invention as a whole would have been obvious to a person having
ordinary skill in the art to which the claimed invention pertains. See 35 U.S.C.
§ 103.
We further note that In re NuVasive, Inc., 841 F.3d 966, 971-73 (Fed. Cir.
2016), cited by Patent Owner (Req. Reh’g. 4), explicitly states that the Board is not
limited to citing only portions of the prior art brought to its attention. In In re
Nuvasive, the court found that the Board relied on a figure and nothing else for a
prior art disclosure of an implant with specific length and width characteristics,
without explaining the obviousness of the figure alone or in combination with
IPR2020-01643
Patent 10,507,088 B2

5

other art. Id. That is not the case in our Decision to Institute. Indeed, as discussed
herein, the Rehearing Request contends we cited too much of Berner. See
generally, Reh’g. Req. 7–8.
Patent Owner’s citation of Nike v. Adidas, 955 F.3d. 45, 51 (Fed. Cir. 2020),
which concerned a Motion to Amend, is similarly inapposite. See Req. Reh’g. 4.
In Nike, the court found that the Board is not constrained to references cited in the
Petition when deciding a Motion to Amend, but must provide the patent owner an
opportunity to make its views known concerning such citations before rendering a
final decision. Nike, 958 F.3d at 51. Nike is inapplicable in this case because we
are not deciding a Motion to Amend, the Decision to Institute is not a final
decision (meaning Patent Owner has ample opportunity to respond), and Patent
Owner already made some of its views known by inviting us to consider testimony
concerning the Berner reference in IPR2020-01088 (“the ’1088 proceeding”). See
Prelim. Resp. 36–37. As the Petition is based on obviousness, the analysis in our
Decision does not advance a new theory, but instead serves to explain our
understanding of what Petitioner demonstrated the references, teach and what they
would have suggested a person of ordinary skill in the art. See, Dec. to Inst. 51.
C. Citation of Testimony from the ’1088 Proceeding
Patent Owner in this proceeding was the petitioner in the ’1088 proceeding.
In the ’1088 proceeding Patent Owner cited Berner as a reference against U.S.
Patent No. 10,349,042 owned by Petitioner in this proceeding. The Petition in this
proceeding cites to Patent Owner’s petition in the ’1088 proceeding (Ex. 1017 in
this proceeding) and to the Declaration of Patent Owner’s expert, Dr. Hesselink
(Ex. 1018 (“Hesselink Decl.”) in this proceeding). See Pet. 16, 18, 24, 26, 27, 48,
54, 56, 60, 64 (citing Ex. 1017); id. 16, 18, 24, 26, 48, 54, 56, 64 (citing Ex. 1018,
IPR2020-01643
Patent 10,507,088 B2

6

Hesselink Decl.)1. In a related proceeding concerning different claims of the ’088
patent, Patent Owner relied upon the ’1088 proceeding, extensively discussing the
testimony of Petitioner’s expert, Dr. Sergienko, in the ’1088 proceeding to rebut
Petitioner’s arguments concerning the reasons to combine Berner and Ginani, even
though Ginani was not cited in the ’1088 proceeding. See IPR2020-01642, Prelim.
Resp. 36–37 (citing Ex. 2004 ¶¶ 22–30 of this proceeding). Patent Owner did not,
however, identify testimony of its own expert, Dr. Hesselink, that is, arguably,
inconsistent with positions Patent Owner takes in this proceeding concerning
Berner. See, IPR2020-01642, Dec. to Inst. 52–53; see also Ex. 1018, Hesselink
Decl. ¶¶ 93–95 of this proceeding.
Relying on Berner to challenge a patent owned by Petitioner, in the ’1088
proceeding, Patent Owner’s expert testified “Berner leaves out some of the
particulars for identifying in-focus positions on the object since these were known
to the person of ordinary skill in the art.” Ex. 1018, Declaration of Dr. Lambertus
Hesselink (“Hesselink Decl.”) ¶ 95 (citing paragraphs 3 and 18–20 of Berner as
“describing prior-art systems for determining 3D surface geometry”). Dr.
Hesselink further testified
Berner admits one issue to its optical configuration is that “scanned
surfaces appear distorted,” with “flat surfaces appear[ing] curved” and
“straight lines appear[ing] unstraight” in its arrangement. Id., [0046].
Berner also notes that “the magnifications and curvatures at each
position in the image differ” in its configurations. Id.; see also id.,
[0026], [0029], [0041], FIG. 3. One of ordinary skill in the art would
have understood that these were all features representative of a normal
(i.e., non-telecentric) lens configuration. Berner goes on to address the
distortions with software-side corrections, using imaging-warping

1 The Petition cites paragraphs 74, 90, 95, 74, 113–114, and 153 of the Hesselink
Declaration
IPR2020-01643
Patent 10,507,088 B2

7

compensation techniques that would have been known to be readily
available at the time. Id., [0047]-[0052].
Ex. 2004 ¶ 942. Berner shows distortions in all 3 dimensions, i.e., X, Y, and Z.
Ex. 1003, Fig. 3, Pet. 23–24. The above cited testimony of Patent Owner’s expert
in the ’1088 proceeding acknowledges that correcting the distortions using
software would have been known to those of ordinary skill in the art, even if
Berner does not provide detailed explanation. Ex. 1018 ¶ 94. Thus, even if Patent
Owner were correct in its characterization of the Petition as premised on a theory
of “one of disclosure that is so apparent no explanation is needed” (Req. Reh’g. 2–
3), the testimony of Patent Owner’s expert in the ’1088 proceeding establishes that
premise and is evidence that no further explanation was required.
Notwithstanding its own citation of testimony in the ’1088 proceeding in the
Preliminary Response, Patent Owner’s Rehearing Request assails our citation of
Dr. Hesselink’s testimony from the ’1088 proceeding and now refers to the ’1088
proceeding as concerning an unrelated patent. Req. Reh’g. 7–9. We need not
decide whether the patent in the ’1088 proceeding is unrelated because we did not
consider Dr. Hesselink’s testimony for what it said about the patent at issue in that
proceeding—we considered Dr. Hesselink’s testimony for what it says about
Berner, a reference that is common to both the ’1088 proceeding and this
proceeding.
Patent Owner’s Preliminary Response in IPR2020-01642 did not mention
Dr. Hesselink’s testimony concerning Berner in the ’1088 proceeding, but only
cited the testimony of Petitioner’s witness, Dr. Sergienko, in that proceeding.
Prelim. Resp. 25–26. Having opened the door to testimony concerning Berner in
the ’1088 proceeding, Patent Owner seeks to slam it shut on testimony of its own

2 Numbers in brackets refer to paragraphs of Berner
IPR2020-01643
Patent 10,507,088 B2

8

expert that is arguably inconsistent with positions Patent Owner now takes on the
penultimate issue of obviousness based on the teachings of Berner. In addition,
having branded the ’1088 proceeding as concerning an unrelated patent, Patent
Owner’s Request for Rehearing in IPR2020-01642, which concerns different
claims of the ’088 patent, reiterates the alleged importance of Patent Owner’s
assertions concerning Dr. Sergienko’s testimony about Berner. See IPR2020-
01642, Req. Reh’g. (Paper 11) 13–14. Patent Owner’s failure to disclose the
testimony of its expert, Dr. Hesselink, concerning Berner in the ’1088 proceeding
that arguably is inconsistent with positions Patent Owner takes in this proceeding
and Patent Owner’s contradictory, flip-flopping arguments concerning the
relevance of the ’1088 proceeding, distract from the issues before us and are
confusing, at best.
D. Positions Advanced in the Decision to Institute
Patent Owner further argues the Decision to Institute substitutes Petitioner’s
disclosure theory with its own reasoning and evidence not presented in the Petition.
Req. Reh’g. 7–8. Patent Owner appears to contend that we should not have read or
considered the references in their entirety and even goes so far as to suggest the
panel should not have considered the entire ’088 patent that is the subject of this
proceeding. Req. Reh’g. 7–12. For example, Patent Owner faults the Decision to
Institute as citing four paragraphs of Berner (paragraphs 32, 38–40)3 not cited in
the Petition. Req. Reh’g. 7. Of these, only non-substantive paragraph 324 was not

3 Patent Owner also complains that the Decision to Institute cites portions of the
challenged ’088 patent (column 18, line 12 through column 19, line 5) and six
paragraphs of Dr. Hesselink’s declaration (paragraphs 73, 93–95, and 109–110) not
cited in the Petition.
4 Paragraph 32 of Berner reads “Fig.1 is a view of an optics for a confocal
microscope as proposed in the prior art.”
IPR2020-01643
Patent 10,507,088 B2

9

cited in the Hesselink Declaration. Ex. 1018, Hesselink Decl. ¶ 89 (citing ¶¶ 2, 3,
10, 11, 13–23, 26, 29, 30, 36–41, 43–53, claims 1, 15, 16, Figs. 1–3 of Berner).
Patent Owner further contends that the Decision to Institute “differs from
petitioner’s disclosure theory in two readily apparent ways.” Req. Reh’g. 8. First
Patent Owner notes our discussion in the Decision to Institute that Berner discloses
correcting distortion introduced by the curvature at each position of an object.
Req. Reh’g. 8–9. According to Patent Owner, the Decision “relies on a new
reasoning of an obviousness theory that is premised on what Berner teaches, how a
POSA would have understood those teachings as suggesting the correction of
‘curvature’ refers to a point, and how a POSA would have modified (or would not
have been foreclosed from modifying) the lens system of Berner such that it would
result in adjustment of the detected point itself using “similar known techniques.’”.
Id. (emphasis in Rehearing Request). As noted above, what a reference teaches or
suggests to a person of ordinary skill is an essential element of an obviousness
analysis.
Our Decision to Institute, does not advance a new challenge or arguments,
theories, or evidence not relied upon in the Petition, as suggested by the dissent.
Dissent 1. For example, the Petition states “a POSITA would have understood
Berner’s model generation would have involved intensity measurements for a
plurality of locations of the at least one lens for determining positions on the
imaging axis of a plurality of points of the three dimension object, as the product
of Berner’s confocal imaging apparatus.” Pet. 28–29. The Petition provides a
detailed explanation of how Berner’s curved focal plane introduces distortion. Pet.
21–24 (citing Ex. 1003 ¶¶ 41, 42, 46, Fig. 3; Ex. 1010, Sergienklo Decl. ¶¶ 102–
109; Ex. 1017 pp. 8, 43; Ex. 1018, Hesselink Decl. ¶¶ 74, 153). In that context, the
Petition provides an annotated figure contrasting the relative distances from the
IPR2020-01643
Patent 10,507,088 B2

10

detector of object M1 when positioned on an optical axis with no curvature (i.e., a
flat focal plane) and objects M2 and M3 positioned on a non-flat focal surface. Id.
at 33–34. The Petition explicitly recognizes Berner’s statement that “the
magnifications and curvatures at each position in the image differ.” Id. at 22
(citing Ex. 1003 ¶ 46). See Dec. to Inst. 38–40. It was Petitioner who pointed out
“Berner also specifically explains its aspherical surface optimization calculations
for each position of its example focal planes/surfaces 7a, 7b, 7c.” Pet. 29 (citing
Ex. 1003 ¶ 42). Further undercutting Patent Owner’s “disclosure” arguments, the
Petition states “a POSITA would have understood that Berner’s system includes
information regarding the surface curvatures that were optimized, the geometry of
those curvatures, the magnification effects of such surfaces, and the focus settings
at which such non-flat focus surfaces are present when using Berner’s optical
system.” Id. (citing Ex.1010, Sergienko Decl. ¶98).
Second, Patent Owner points to the Decision’s discussion of retrocorrecting
curvature at each position of an object, for example, using a polynominal with
variables X, Y, and Z. Req. Reh’g. 10–11. According to Patent Owner, the
Decision postulates what is indicated from Berner’s teaching about mapping of
curvature and polynominal approximation. Id. at 11. Patent Owner
misunderstands the Decision. Indeed, much of our discussion is prompted by
Patent Owner’s assertions in the Preliminary Response that a point has no
curvature and that Petitioner fails to explain how correction of curvatures in an
image equates to adjustment of a detected position of a point. Dec. to inst. 45.
As discussed above, the Petition explains how, as compared to a flat focal
plane, Berner’s curved focal plane causes points on a flat surface of an object to be
different distances from a detector, resulting in distortion. Pet. 21–24. The
Petition also states that Berner acts on image information prior to generating a
IPR2020-01643
Patent 10,507,088 B2

11

three dimensional representation of the scanned object and “detected positions []
are to be adjusted” to compensate for the non-flat focal surface. Pet. 30. The
Petition also explains that Berner and Ginani discloses a “structure that provides
the function to generate an array of light beams arranged in an X-Y Cartesian
plane, that propagate along a Z-axis.’” Pet. 35 (quoting Ex. 1010, Sergienko Decl.
¶112); see id. at 35–37, see also, id. at 36–37 (“Ginani’s microlens array [] splits
the parent light of the collimator [] to generate an array of light beams arranged in
an X-Y Cartesian plane that propagate along a Z axis” (citing Ex. 1010, Sergienko
Decl. ¶ 116). The Petition also points out that “Berner’s illumination pattern 1
provides a light system that arranges light rays in an X-Y Cartesian plane (i.e.,
2D), such that they are propagated along a Z axis.” Dec. to Inst. 46 (quoting Pet.
35). The Decision further notes that in the ’1088 IPR Patent Owner asserted the
same teachings in Berner that Petitioner relies upon in this proceeding. Id. 47–48.
The Petition further points out Berner’s disclosure of mapping curvatures using a
mathematical function and retrocorrecting the curvature at the scanned positions of
an object. Pet. 30. Further undercutting Patent Owner’s argument that the Petition
is based on express disclosure is Petitioner’s assertion that “a POSITA would have
appreciated that the foregoing is describing at least one compensation model [] and
that the model is used to retrocorrect previously scanned flat surfaces, all of which
‘can be mapped and approximated by a mathematical function, e.g., a
polynomial.’” Pet. 31.
In short, the Decision to Institute did not substitute an obviousness theory of
its own for that advanced by Petitioner; nor did the Decision overlook or
misapprehend the evidence, including evidence Patent Owner prompted us to
review that establishes the relevance of Berner and that Berner’s distortion
correction would have been known to those of ordinary skill. Rather than
IPR2020-01643
Patent 10,507,088 B2

12

introduce a new theory of obviousness or consider new evidence, the Decision’s
discussion of Berner actually is consistent with theories advanced by Petitioner and
by Patent Owner’s expert concerning Berner.
E. Alleged Additional Deficiencies
The Request for Rehearing asserts that the Decision “overlooked additional
deficiencies of the petition and failed to acknowledge arguments raised in the
Patent Owner’s preliminary response. Req. Reh’g. 12.
Patent Owner contends that the Decision to Institute overlooked the
Petition’s deficiencies in failing to explain with particularity the evidence
supporting Ginani’s availability to the public prior to the invention date. Req.
Reh’g. 12 (acknowledging Petitioner’s reliance on the Hall-Ellis Declaration).
Patent Owner then argues that the Decision cites evidence not of record to fill in
gaps in the Petition. Id. at 13. The evidence “not of record” is the content of
website links provided in footnotes of the Hall-Ellis Declaration to support her
testimony that Ginani was publically available at the relevant time. Ex. 1008 FN
14, 15. We reviewed those web sites and made them of record. There was no gap
to fill, as the Hall-Ellis Declaration is sufficient to meet Petitioner’s burden at
institution, even without the Board’s exhibits.
F. Conclusion
The Decision to Institute provides a thorough analysis of the record in the
context of the obviousness challenge to certain claims of the ’088 patent articulated
in the Petition.
Patent Owner’s Rehearing Request fails to demonstrate that the Decision to
Institute overlooked or misapprehended the law or the evidence. As a result Patent
Owner’s Rehearing Request is denied.

IPR2020-01643
Patent 10,507,088 B2

13

III. ORDER
It is ORDERED that
Patent Owner’s Request for Rehearing is DENIED.

Claim(s) 35 U.S.C
§
Reference(s)/Basis Denied Granted
1–5, 7, 9,
19–24, 26
103 Berner, Ginani 1–5, 7, 9,
19–24, 26

IPR2020-01643
Patent 10,507,088 B2

14

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

3SHAPE A/S and 3SHAPE INC.,
Petitioner

v.

ALIGN TECHNOLOGY, INC.,
Patent Owner.
____________

IPR2020-01643
Patent 10,507,088 B2
____________

Before BRIAN J. McNAMARA, NEIL T. POWELL, and
ELIZABETH M. ROESEL, Administrative Patent Judges.

ROESEL, Administrative Patent Judge, dissenting.

I dissent from the denial of rehearing for the reasons given in my dissent
from the grant of institution. Paper 9 (dissent). I agree with Patent Owner that
“the majority decision departed from the arguments and theories presented in the
petition and instead chose to adopt different arguments based on different evidence
the petitioner did not actually raise.” Reh’g Req. 4.

IPR2020-01643
Patent 10,507,088 B2

15

For PETITIONER:
Todd Walters
Roger Lee
Andrew Cheslock
BUCHANAN INGERSOLL & ROONEY PC
todd.walters@bipc.com
roger.lee@bipc.com
andrew.cheslock@bipc.com

For PATENT OWNER:

Michael Rosato
Matthew Argenti
Tasha Thomas
WILSON, SONSINI, GOODRICH, & ROSATI
mrosato@wsgr.com
margenti@wsgr.com
tthomas@wsgr.com